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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CMGI, Inc. v. Reyes

Case No. D2000-0572

1. The Parties, the Domain Name(s) and Registrar(s)

1.1. The Complainant is CMGI, Inc., a Delaware Corporation headquartered in Andover, Massachusetts ("CMGI"). CMGI initiated this administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") whose terms form part of a domain name services agreement (the "Agreement") entered into between Register.Com, Inc. of New York, New York (the "Registrar") and the Respondent, Gregory Reyes, who claims to be an individual resident of Houston, Texas (the "Respondent"). The Agreement calls for the Respondent to receive Internet message traffic addressed to the domain name, CMGIASIA.COM.

2. Procedural History and Factual Background

2.1. CMGI alleges that it has been using the mark CMGI to identify its company and its goods and services since October 5, 1998. CMGI further alleges that it is the owner of pending applications for registration of CMGI as a trademark or service mark in the United States, the Philippines, Japan, Malaysia, Hong Kong, Singapore, Indonesia, and South Korea. CMGI further alleges that it owns registrations of CMGI as a trademark in Australia, Mexico, Korea, and Taiwan. CMGI operates a web site associated with the Internet address CMGI.COM.

2.2. According to documents which accompanied CMGI’s complaint, CMGI issued an announcement on January 25, 2000, that it was forming a joint venture with a Hong Kong-based company to create a network of Internet businesses in the Asia-Pacific region. On the same day that CMGI announced its intention to establish an Asian joint venture, the Respondent registered the Internet domain name CMGIASIA.COM with the Registrar. Two days later, a third party identified in the pleadings as "Ron Jewell" offered to "sell" rights in the domain name CMGIASIA.COM to a representative of CMGI.

2.3. On or about June 7, 2000, CMGI filed a complaint with the Arbitration and Mediation Center of the World Intellectual Property Organization (the "Center") which is qualified to administer proceedings commenced under the Policy. In its Complaint, CMGI alleged that Respondent had registered CMGIASIA.COM in bad faith and in violation of pre-existing rights of CMGI to exclude others from using CMGI as a designation of origin. By letter dated June 15, 2000, the Center notified Respondent of CMGI’s complaint.

2.4. Respondent served a Response dated July 1, 2000 (the "Response"). In his Response, the Respondent did not controvert Complainant’s claims of trademark ownership. Respondent alleged that he was in the process of starting a family owned antique business on the island of Mindanao, and that "[t]he word ‘GIASIA’ is a common dialect in the island which means ‘old’ or ‘aged’." The Respondent further alleged that he "has a trading business dealing with antiques from all parts of the Philippines." The Respondent claimed not to know the Mr. Ron Jewell, who had contacted CMGI concerning a potential sale of rights in CMGIASIA.COM; however, Respondent acknowledged having corresponded with Mr. Jewell and "asked what amount would Mr. Jewell pay for the name."

2.5. Following the appointment of the undersigned as a Panelist in accordance with the Policy, I issued Procedural Order No. 1 which directed Respondent, pursuant to Rule 12 of the Policy, to furnish the following documents to the Panel:

a. Such documents as will show that Respondent is a native of Mindanao, as stated or implied in paragraph 6 of the Response dated July 1, 2000 (the "Response");

b. Such documents as will show that "giasia" is a word meaning "old" or "aged" in a "common dialect in the island" as alleged in paragraph 6 of the Response;

c. Documents sufficient to establish the existence and nature of the "trading business" alleged in paragraph 7(ii) of the Response, including (a) samples of any advertisements distributed by the business prior to January 25, 2000; (b) samples of any invoices issued by the alleged business prior to January 25, 2000; and (c) records showing any physical location and telephone number used by the alleged business prior to January 25, 2000;

d. The correspondence in which Respondent allegedly asked Mr. Jewell "what amount would Mr. Jewell pay for the name" referred to in paragraph 9 of the Response.

2.6. Respondent’s original due date for furnishing these documents was July 21, 2000. Respondent sought and was granted an extension of time to and including July 28, 2000, in which to furnish the requested documents. At the time Respondent was notified that his request for extension of time was granted, the Center further advised Respondent that the due date for the Panel decision in this matter was August 4, 2000. As of August 8, 2000, Respondent had not furnished any of the requested documents and had not sought leave for any further extensions of time.

3. Discussion and Findings

3.1. Section 4(a) of the Policy entitles a complainant, such as CMGI, to seek an administrative transfer of a second level Internet domain name in the event that it "proves," to the satisfaction of the Panel, three predicates: (1) an accused domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) a registrant has no rights or legitimate interests in respect of the accused domain name; and (3) a registrant’s domain name has been registered and is being used in bad faith.

3.2. CMGI has proved each of the preceding three elements to the satisfaction of the Panel. The accused domain name, CMGIASIA.COM, is confusingly similar to Complainant’s CMGI mark. Respondent has not controverted complainant’s ownership of trademark of service mark rights in CMGI.

3.3. The Panel infers, from the pleadings and from Respondent’s failure to produce any of the documents which the Panel requested, that the purported explanations given by Respondent for his registration of CMGIASIA.COM are pretextual; that Respondent has no rights or legitimate interests in respect of the domain name CMGIASIA.COM; and that Respondent did, as alleged, register CMGIASIA.COM in bad faith immediately following CMGI’s announcement of its Asia-Pacific joint venture.

4. Decision

4.1. It is, therefore, the decision and judgement of this Panel that the second level Internet domain name, CMGIASIA.COM, be and the same hereby is ORDERED TRANSFERRED to Complainant in accordance with the Policy.

4.2. The Case Manager is directed to forward this Administrative Panel decision to the parties and to the Registrar in accordance with the Policy.